Notice and Notice Failure at BU, panel 6

Margaret Jane Radin – Patent Notice and the Trouble with
Plain Meaning
Notice is a cost and a cost-saver; hard to figure out its
overall profile.  Plain meaning as
ever-receding ideal.
Philips v. AWH (Fed. Cir. 2005); Festo (2002).  In Philips,
Fed. Cir. laid out interpretive procedure agreed on by all but 2 judges to
focus on entire available text, including prosecution history. Only useful from
notice POV if they generate more predictable outcomes—but they still didn’t get
the same answer when they applied the agreed-on interpretive approach to the
facts before them.  Not clear that the
interpretive models affect outcomes, compared to priors.  If context really does matter, then intuition
is not necessarily a huge problem.  Maybe
plain meaning is really closet holism.
Festo: Introduced the concept of describability.  Doctrine of equivalents and file wrapper
estoppel.  At least estopped from
claiming something described and disallowed during prosecution.  But broader implications: it’s a crucial
issue whether an equivalent could’ve been described in language when the claim
was drafted, and this can occur even w/o claims being amended.  Describability can change over time; if it
was describable at the time of prosecution then you can’t get it, and if it’s
only describable now then maybe you can. 
Describable by whom? Great unanswered Q—we don’t want to think of patent
prosecutors as co-inventors, but it’s a fact.
Other patent puzzles: if fully describable at the language
of the time, is it then obvious?
Inventions are emerging knowledge, and thus plain meaning
will be contestable, lacking the clarity its advocates hope for it.  The word describable is new in Festo but the
older cases use the concept—the emergent nature, esp. of true breakthroughs—language
only catches up. Thus the idea of the essential nature of an invention
survives, even though it’s an echo of central claiming that died long ago and
even though it’s anathema to plain meaning advocates.
Suzanne Michel, Sr. Patent Counsel, Google
Wasteful litigation boom. 
Lack of clear thinking about claim construction is an important reason
for lack of clear patent boundaries. 
True, fencelike boundaries can’t be achieved when describing something
that’s new. But it’s still a useful analogy/talking point/goal even if we can
never get to that shining beacon—can still consider whether we’re improving or
not improving.  Points out the
shortcomings of the term “IP,” a boon for patent maximalists.
Judges make decisions for reasons they’re not fully
examining in claim construction. 
Unpacking methods will improve decisions. One frustration is the pablum
that judges just apply the law, not make policy—that isn’t and can’t be
true.  Plain meaning judges will often
limit claims only if there’s a clear disavowal, which means that Philips didn’t
change what it was supposed to.
Would focus on the context of the patent document. Often in
litigation the words the case turns on is not one that has meaning in the art—“sandwich”
in an electronics patent; so you have to lean on the specification.  Also relates to proportionality/patent
bargaining: right should be commensurate with what you have given to the public,
what is described in the specification.
In some cases interpreting a patent narrowly to sustain it
is a better idea than broadly then arguing over invalidity.  When a patent is interpreted broadly and the
only defense remaining is invalidity, people are coerced into settling.  Disclaimer approach (only limiting the scope
when there’s a clear disclaimer) penalizes patentees who clearly describe their
inventions.  People who have a patent for
a fax machine then claim the internet infringes are a huge problem. 
Keith Hylton – Patent Uncertainty: Toward a Framework with Applications
Uncertainty has dynamic and static elements (uncertainty in
determining boundaries of property 
right).  Sources of static uncertainty
include: (1) statistical artifacts from the sample of cases you look at. (2)  Inherent uncertainty, as Radin
discussed.  (3) Strategic uncertainty:
people gaming the system to use it to their advantage.  Static/dynamic balance is why increasing
scope doesn’t always increase innovation: optimal scope (which applies to all
property rights).
Statistical artifact uncertainty: Oversampling, as you
oversample the bad drivers you encounter on the road.  Explosion of litigation costs in patent—timed
to software patents.  Alice produced a sharp drop in patent
litigation—at least 1/3 and maybe more. 
Recent uptick in 2015, but not enough to take it back up to previous
levels.  Suggests that knock-on effect of
Alice was reducing this observation
of uncertainty. 
Another feature of software patents: asymmetric information
probably less of a problem than with things like medical malpractice. 
Inherent uncertainty: Courts start from maximal uncertainty about
a case and try to work towards an optimal rule—this uncertainty is unavoidable.
Strategic uncertainty: deliberate use of vagueness to
increase economic value of patent/expand its boundaries.  Four categories of uncertainty w/in strategic
uncertainty.  First, inherent level of
abstraction in the patent + notice.  Are
you truly trying to tell people about the boundaries of this patent?  Abstraction: what applications, known and
unknown, does this patent cover? 
Abstraction can coexist with notice—they are separate in that I could patent
the quadratic formula and then there’d be notice but lots of abstract uses.  Bilski:
people know what hedging in the energy markets is and they know what a computer
is so they know when they’ve implicated the Bilski
patent. Abstract w/o notice is the most troubling quadrant (remaining: not
abstract + notice; not abstract + no notice).
Algorithmic patents should just be unavailable/ineligible.
But other software patents are worth worrying about.  Rowe
patent: detects driver impairment.  We
want that innovation incentivized in that space, so Alice shouldn’t be quick to kick out those kinds of innovations.
Benjamin Roin: Policy levers—blunt tools are hard to think
about b/c there’s so much going on at the theoretical and empirical
levels.  Some qualms about use of terms
static/dynamic—in some sense static uncertainty about what a claim covers is
always dynamic b/c you don’t know what tech will arise.  It’s clear that abstraction and notice aren’t
the same thing.  Roin suggests: also considering
patents as necessary incentives for underlying invention—that’s actually
distinct from notice and abstraction. 
Probably relates to R&D costs, market, uncertainty, cost of capital,
cost of imitation.  If we want to get rid
of chunks of patents, incentives should be part of that analysis.  Driver safety software: significant premakret
safety testing, long time to market, need for licensing to big auto, need to
create the market—they may or may not need a patent. 
Benefits of uncertainty: Incentive benefits of patents are highest
when blocking copycat imitation and “fast followers.” Practitioner literature
emphasizes difficulty foreseeing & drafting claims to block all design
arounds.  “Ease of designing around” is
most common reason patents are seen as ineffective in industry surveys.  Rules v. standards: vague(r) claim language
helps or could help block mere design-arounds. 
In tax rules, precision makes evasion easier.  Dissidents in USSR wanted clear standards so
they could avoid censorship; censors refused so they could punish them after
the fact. 
Notice to whom? 
Potential infringers w/advance notice are more likely to avoid liability
by designing around the claims. Copycats and fast follwers are probably most
likely to have notice of the patent. Are we getting the worst of both worlds?
Maybe we give sufficient notice & certainty to allow them to design around,
undercutting main beneficial incentive effects; while giving insufficient
notice and certainty to more substantive follow-on innovators (particularly
ones in complex downstream product markets and ones in more distant tech/market
spaces), exacerbating the system’s main adverse incentive effects.
Stan Liebowitz – The Benefits of Unbundling Copyright from
Patent in Economic Analyses
© and patent are often lumped together in discussions,
including discussions about notice, but they differ in important ways, leading
to analytical errors when they are lumped together.  [Liebowitz thinks that it is easy to tell
when you have infringed copyright because, except in unconscious copying cases,
you know when you’ve copied and thus it’s easy to avoid, unlike patent
infringement which does not require copying. 
This entirely ignores idea/expression difficulties and his own discussion
of genre and how no copyright owner can own an entire genre even if she creates
it.  By definition, creators who
participate in the genre know of the existence of the founder, and their
question is how close they can go.]
Notice costs are resources used to impart ownership
information.  The idea that
IP/intangibles have higher notice costs than tangible goods. This may be true
for patented goods; less likely to be true for copyrighted goods. 
Simplifications: creators of new works try to avoid
infringing previously created works or wish to get permissions.  This is the forward-looking view.  I will assume © lasts forever with no
limitations on ownership rights, which eliminates the need to examine the costs
of dealing with restricted ownership, such as fair use or compulsory
licensing.  [So, assuming a can opener, ©
would be different from patent?  And yet
it’s still not true b/c of idea/expression.] 
If you don’t copy from someone else, it’s ok.  If you never saw the first work, it doesn’t
matter if the second looks like it.  [The
other important thing he has assumed away is any difference between “never saw”
and “never copied,” which is idea/expression. 
And yet successful works are seen and heard by millions, because that’s
how they have value.]  It’s perfectly
fine for the Beatles to write “Back in the USSR” to josh about the Beach Boys’ “California
Girls” b/c all they took is the idea, so they don’t have to worry about notice
costs. There are no notice costs as long as people are only creating new stuff.
 This is possible in © but not in patent
or real property.  [It’s distressing to
me that he doesn’t notice the contradiction inherent in his story of the
Beatles creating as a but-for consequence of the Beach Boys.] 
Of course, this isn’t the real world.  There are copiers out there, and that
produces notice costs for permission, evasion, or application of exceptions.  Costs are higher b/c copiers want to avoid
payment by checking on whether works are in © (or limits apply)—duration imposes
extra notice costs.  Fair use imposes
extra costs, but these are not notice costs b/c neither the owner nor the
copier can tell another whether a use is fair use.  That’s a cost, but he doesn’t want to call it
a notice cost b/c it comes from the legal system and not from a claimant
thereunder.  We have decided to bear the
costs of having fair use.
Bottom line: copyright has lower notice costs than other
properties for works created de novo, at least when people know when they’re
copying. Guesses that majority of works that have market value are works of
this type.  Thus, patent notice costs are
likely to be higher.
Wendy Gordon: Key point: he reminds us that if we’re not
copying, we don’t need to worry about copyright, in the abstract. In the
concrete, given the ubiquity of works, you can be forced to prove you didn’t
copy b/c access will be possible.  The
practical issues arise, though perhaps not to the extent as in patent. Favorite
example: Spider Robinson’s sf story, Melancholy Elephants—if we knew our
borrowings all the time we’d always infringe; we need the ability to forget.
Notion, adopted as a matter of mere convenience, of inherent
copyright (that lasts forever with no holes)—it’s inherently contradictory.  If a copyright were completely owned, then
its ideas would also be owned. A classic ambiguity—and you’re trying to rule
out ambiguity—is idea/expression. We also recognize indirect liability: if I
copy Stacey & she copied Fred, Stacey’s grant of permission to me doesn’t
help my violation of Fred’s rights.  
If your hypothesis is that everything the creator did was
new, you have the paradox of human creation—language is not new.  You are always building on the foundations
built by others.  There is no such thing
as inherent copyright.
Patent too often takes for granted that independent
inventors, if they come/file later, are guilty of infringement. This gives rise
to trolling/submarine problems.  Arguing
that patents shouldn’t have a defense for independent inventions because that
would be inefficient requires some heroic assumptions.  She’s never been persuaded that simultaneous
invention justifies the absence of an independent inventor defense; also seems
inconsistent w/ human rights entitlement to the fruits of one’s own labor.  Winner-take-all seems unjustified.
Lemley: for Radin: Agrees w/approach and suggestion that
plain meaning won’t bring clarity. Take your argument to its logical
conclusion, and it’s not obvious that adding more words on top of the claim
gets us any further.  Claim construction
= lawyers fight about meaning of claim construction.  19th century model: would we be
better off w/central claiming and what the patentee actually built, not what
the lawyer wrote?
Radin: sympathetic to that—we do that sub rosa.  Causes judges sometimes to construe “plain
meaning” broadly.  Thinks we always have
Menell: pragmatic issues around Markman hearings are so strong—dealing with judges not trained in
these areas—you need assistance finding the essence of an invention. © also
needs a Markman process trying to
delineate what the uncopyrightable elements of the work are for the jury. That’s
an important part of the translation. 
For Roin: suggests benefits of uncertainty, but you can’t
have a public system of property rights w/o a serious public disclosure of
boundaries.  Left w/trade secret if you
don’t want that.
Roin: It’s a rule v. standard thing—ex ante v. ex post.  (So I take it that central claiming could
address some of his issues?)
Q: when you have a patent, you have multiple claims, not
just one claim.  The life of a patent isn’t
over during the span it’s in effect.  You
can cross-license with an improver.  You
can use continuations to extend its life.
Radin for Michel: Michel suggested that boundaries were a
good analogy/aspiration, but Radin thinks it can be a misleading one.  We still have lots of agreement about what
judges are doing.
Chiang: You can’t capture the policy goal of complete
definition with language. But if you want a rule w/ a result that’s clear one
way or another in a particular case, then you can provide notice/plain meaning—everyone
can predict the result ahead of time. 
Radin claims that the fact that judges purport to apply plain meaning
doesn’t show such a thing exists, and he agrees. But the fact that they disagree
on what the plain meaning is also doesn’t show there is no such thing as plain
meaning.  You have to add in dishonesty
[Radin clarifies: not in the sense of lying, but in the sense of having
intuitions that are not fully explained].
Radin: we can get many easy cases, but when there’s a lot of
money that matters we won’t get help from plain meaning.
Chiang: but as a philosophical claim that plain meaning
doesn’t exist, it’s a problem that your claim only covers hard cases, not easy

Radin: sure there is plain meaning when we all agree, but that’s not b/c of
inherent meaning but rather b/c we all agree.
Henry Smith: can agree that plain meaning doesn’t exist in
practice/hard cases but still not think it necessarily matters.  You could think language is indeterminate,
and nonetheless formalism/contextualism depends on the nature of the system. We
have different varieties of English, some more and less formal.  There’s a dividing line about what we should
care about. The plain meaning folks are saying “in this context, we need only
so much information, not more, to do what we want done”—that’s a pragmatic
judgment. Philosophy of ideal points doesn’t tell us much about that.

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